Intellectual property law is good. Excess in intellectual property law is not. This blog is about excess in Canadian and international copyright law, trademarks law and patent law. I practice IP law with Macera & Jarzyna, LLP in Ottawa, Canada. I've also been in government and academe. My views are purely personal and don't necessarily reflect those of my firm or any of its clients. Nothing on this blog should be taken as legal advice.

This decision confirms that, pursuant to 17 USC §412, there can be no recovery of statutory damages or attorney's fees for infringed foreign copyrights unless there has been timely registration in the US Copyright Office. That's no different than for U.S. Copyrights. But one might have thought that the USA would not impose formalities on foreigners, because the Berne Convention prohibits this. The Judge ruled that the Berne Convention didn't help here because it is not self executing.

None of this is surprising or even new. And the result treats foreigners no worse in this respect than owners of American copyright.

If this seems like déja vu all over again, it is - because there was an important similar ruling in the YouTube litigaiton by another SDNY judge, Louis Stanton, last year which I blogged about here.

But it highlights an area in which US law is MUCH weaker than Canadian law. Canada has statutory damages and has a registration system. But there is no sine qua non of prior registration in order to be eligible for statutory damages. There are significant advantages to timely registration in Canada in terms of proving the ownership and subsistence of copyright and entitlement to damages when the defendant proves that, at the date of the infringement, the defendant was not aware and had no reasonable ground for suspecting that copyright subsisted in the work or other subject-matter in question.bBut there is nothing resembling the harsh disadvantage of failure to register in the USA.

On a policy and political level, this shows once again the “do as we say, not as we do” approach of the USA when it preaches that other countries don't provide "adequate and effective" enforcement. On this issue, Canada once again comes out way ahead.

The even more interesting question is whether there is a Berne Treaty violation here - in terms of the imposition of mandatory formalities (i.e. registration) in order to achieve “adequate and effective” protection, as the Americans like to call it.

Article 5(2) of the Berne Convention provides that:

The enjoyment and the exercise of these rights shall not be subject to any formality; such enjoyment and such exercise shall be independent of the existence of protection in the country of origin of the work. Consequently, apart from the provisions of this Convention, the extent of protection, as well as the means of redress afforded to the author to protect his rights, shall be governed exclusively by the laws of the country where protection is claimed.

The decision provides a short but very discussion of the legislative history of §412 and the discussion of the Berne Convention. The U.S. Senate chose NOT to amend the section in order to relieve foreigners of these formality requirements because it concluded that this was not necessary. Elsivier argued that this decision by the Senate was wrong and that §412 conflicts with Article 5(2) of Berne. But the Judge did not rule on that argument, given his ruling that the Berne Convention is not self-executing and that it therefore doesn't apply.

It should be noted that USA registration, while not rocket science, can be far more difficult and expensive in terms of legal fees than Canadian registration. One has to choose the right form (not always obvious) and there is examination involved. The process is slow and the outcome is not always assured, given that the examination process is quite serious. In contrast, the Canadian system is much simpler and there is no examination. Indeed, one can't even deposit the work.

Let's see if anyone in another country is sufficiently riled about this to bring a WTO complaint, as was done successfully against the USA in the notorious §110 case about the exemption for performances in countless small establishments such as bars, restaurants and stores.

Thursday, February 18, 2010

The annual International Intellectual Property Alliance ("IIPA") litany of misleading and overwrought allegations against Canada as a "haven" for all sorts of "piracy" and other evils has just been published.

The IIPA, which has been run by a couple of very smart lawyers in Washington, describes itself as follows:

The International Intellectual Property Alliance (IIPA) is a private sector coalition, formed in 1984, of trade associations representing U.S. copyright-based industries in bilateral and multilateral efforts working to improve international protection and enforcement of copyrighted materials and open up foreign markets closed by piracy and other market access barriers.

IIPA’s seven member associations are: the Association of American Publishers (AAP), the Business Software Alliance (BSA), the Entertainment Software Association (ESA), the Independent Film & Television Alliance (IFTA), the Motion Picture Association of America (MPAA), the National Music Publishers’ Association (NMPA) and the Recording Industry Association of America (RIAA). IIPA’s seven member associations represent over 1,900 U.S. companies producing and distributing materials protected by copyright laws throughout the world—all types of computer software, including business applications software and entertainment software (such as videogame discs and cartridges, personal computer CD-ROMs, and multimedia products); theatrical films, television programs, DVDs and home video and digital representations of audiovisual works; music, records, CDs, and audiocassettes; and textbooks, trade books, reference and professional publications and journals (in both electronic and print media).

The IIPA tells us how we should run our law enforcement agencies, operate our borders (by keeping Judges out of the seizure procedure because going to court is "unduly burdensome") and generally using taxpayer resources to enforce their members' private rights.

Unfortunately, they have sympathetic listeners in Canadian law enforcement and the government itself.

But the real agenda here may well involve other issues - such as parallel imports, which are perfectly legal and - to the dismay of many content owners - very competitive and consumer friendly. For a lot of content owners, anything that can delay or hinder parallel imports or other legitimate products is good. That easy access to non-judicial "ex officio" border enforcement can be used for abusive and anti-competitive purposes has recently been illustrated in the Netherlands with respect to perfectly legal - but "generic" - AIDs medication that reportedly got seriously held up for all the wrong reasons. People may well have died.

It certainly seems incongruous to hear a major trade association in the entertainment business taking upon itself the crusade against counterfeit toothpaste, etc.

Nobody defends piracy or counterfeiting. The problem, however, is to ensure that changes in the law don't affect legitimate activity, such as parallel importation.

We have seen how the pursuit of a just, commendable and unnecessary cause (anti-terrorism) can lead to serious, unnecessary and inefficient erosion of privacy and other fundamental rights of countless innocent people. Let us hope that the overblown invocation of "piracy" and "counterfeiting" does not cause more harm than good.

Hopefully, Gordon will see a big spike on his SOCAN/NRCC cheques for today's bizarre hyperactivity. But he shouldn't count on it - because the mysteries of Canadian collectives' logging and accounting are beyond the scrutiny of mere mortals such as artists and of no interest to Canada's Copyright Board.

I’ve said very little about the Google Book Settlement (“GBS”) to date because it is so complex and because is raises so many unanswerable questions. Moreover, at this stage I have no committed convictions on it. In fact, I’m really genuinely agnostic about it.

On the one hand, I love the idea of great celestial digital library in the cloud that will include virtually all useful books, including "orphans", will last forever and provide the greatest possible accessibility at the lowest possible cost while fairly compensating current rights owners. On the other hand, I wonder whether this grand vision is entirely legal under the relevant current domestic and international legal regimes. I’m skeptical about using the class action process of a single country, wherein a handful of brilliant and well intentioned individuals can take upon themselves the mandate arguably to unilaterally, effectively and fundamentally change copyright law in the major English speaking jurisdictions of the world, with French books published in Quebec being included. Moreover, I have serious questions about a settlement that will sweep in Canadian authors and publishers but will deny Canadian users most of the bells, whistles, benefits and access to the resulting library.

There are big questions here that won’t go away easily. Judge Denny Chin is a District Court Judge in the Southern District of New York who has been nominated to the fabled Second Circuit Court of Appeals to replace Judge Sotomayor who was recently appointed to the US Supreme Court. He will have to rule on many complex questions following a fairness hearing today February 18, 2010 dealing with the Amended Settlement Agreement (“ASA”). Judge Chin has dealt with many high profile cases, including that of Bernie Madoff, who he sentenced to a longer than life term of 150 years in jail, leaving no doubt that life means life.

For starters, here is the partial list of documents that Judge Chin will have to consider, most of which were only recently filed. There have, of course, been many more filed before this ASA hearing was set down and for the first hearing.

Here are some of the general questions that various stakeholders have for Judge Chin, followed by some Canadian based questions that he may not have to answer but Canadians need to consider:

General:

1. Is this an appropriate use of the class action process, especially in view of the many prestigious groups, corporations and individuals who have objected to the ASA? In other words, to what extent does the class involved adequately represent affected authors and publishers, not to mention countless other stakeholders, including librarians and scholars?

2. Can a class action settlement go well beyond the original pleadings and, effectively, change the law both for the past and for the future in a way that would otherwise be impossible at this point in time if it were to be attempted in Congress and/or through a treaty?

3. Given the extraordinary complexity of the settlement documentation and the relatively short notice period, can affected authors, publishers and other stakeholders realistically come to informed conclusions?

4. Is it appropriate to use class action litigation to arguably transform the normally “exclusive rights” basis of copyright law, which requires explicit permission, into an opt-out regime, where permission will be given unless specifically refused in writing? The deadline for total “opting out” was January 28, 2010. Google argues that even those who didn't opt out by January 28, 2010 will have plenty of opportunities to exercise control over their works down the line for many purposes - but this will still require further “opt out” or other action.

6. What will be the antitrust implications of the ASA, given the dominant or monopoly position that Google will have with respect to several markets that it is creating by virtue of this Settlement, i.e. access to orphan works, and, above all the sole portal to search engine access to the database of tens of millions of books (the great “Library to Last Forever”, as Sergey Brin himself calls it)?

8. What are the extraterritorial implications of this agreement, which requires authors of books published in Australia, Canada (including French language books) and the UK (the “foreign publishing countries”) to have opted out by January 28, 2010 or be bound by it? It also covers books published in these countries, even for the countless authors who are not citizens or residents of these foreign publishing countries or the USA. Unlike United States works, there is no requirement for the foreign works to have been registered in the US Copyright Office. Given the practice of simultaneous or near simultaneous publication of countless English language books in the foreign publishing countries, Google will acquire an enormous number of books in their database that would not fit into the necessarily tighter definition of a US work, which requires publication and registration in the USA. Moreover, many French books published in Quebec but originating from anywhere in the world including France would be included.

9. What about the countless past agreements signed between authors and publishers that were silent or at best ambiguous about electronic rights?

10. What about the privacy rights of potential users?

Here are some Canadian-focussed questions, which Judge Chin will not likely answer but others may eventually have to face:

1. Why has the Government of Canada apparently been uninvolved and uninterested in the GBS? There has been no public consultation that I am aware of. France and Germany have become engaged at the official level. On the other hand, Canadian officials who would normally be involved in an issue such as this haven’t been.

2. Where are the several prominent Canadian trade associations and collectives that should have provided some useful specific advice and potentially some representation for Canadian authors, publishers, librarians etc. on these issues?

3. What are the implications of the Google Partner Program, which appears to allow publishers to feed into Google’s database for very extended access the books of many authors, who may have been and still may be unaware of the Program?

4. Why is this shaping up to be a battle between scholarly and other individual authors. ranging from the most obscure to J. K. Rowling herself on the one hand and big corporate publishers on the other? I note that the Canadian Publishers’ Council and the Association of Canadian Publishers (which together represent the big multinational and major Canadian publishers) are recommending approval of the Settlement at the same time that they attempting to intervene to fight “flexible fair dealing” and push back on theCCH v. LSUC decision in the Access Copyright K-12 case currently before the Canadian Federal Court of Appeal. On the other hand, many independent Canadian authors and the Canadian Association of University Teachers (“CAUT”) are opposing the GBS. Naturally, the database will be far more important for innovation and research purposes with respect to scholarly works than, for example, light romance novels (no offence to the fan fiction crowd).

5. Although vast numbers of Canadian published books by thousands of Canadian authors will be drawn into this settlement, most of the bells and whistles of the Google Books database will presumably not be available in Canada with respect to most of the database. This is because Google is necessarily putting up something of a firewall around this database since, even though there may be some extraterritorial aspects to the settlement, the Settlement not surprisingly purports not to affect activities implicating copyright rights in foreign countries outside of the USA.

6. Canadians may wish to read, if nothing else, the submissions of Google itself and the US Department of Justice (which supports the basic goals of the ASA but reiterates that it is still “a bridge too far” and should not be approved as is). Canadians will also want to read the few but important submissions from Canada. As well, there are “must read” submissions from Pam Samuelson and many notable advocacy groups on all sides, and corporate interests, including Microsoft and AT&T.

There is no doubt that Judge Chin will have his hands full with this case, and they eyes of the entire copyright world will be focussed on him. If this case were ever to go to trial, it would likely be a vastly more complex copyright case than anything ever heard anywhere before. Whatever happens after today will most certainly not be a routine rubber stamp judicial approval of a class action settlement.

Judge Chin's ruling will have profound public policy implications not only in the USA but potentially also everywhere else. Whatever Judge Chin decides, he will be expected to provide ample reasons. Despite, or perhaps indeed because of, the importance, complexity and controversy of this matter, I’m willing to predict that we will see a lengthy and detailed judgment from Judge Chin in a few weeks or a few months at the most.

Wednesday, February 17, 2010

The deadline for submissions on the U.S. “301" process has been extended until 5:00 PM on Thursday, February 18, 2010 due the Washington weather. This year, the USTR is calling for public submissions and will hold hearings. In the past, the process has been far from transparent. In fact, in the past the report has been heavily influenced if not essentially drafted by certain Washington lawyer/lobbyists with major copyright content industry clientele operating under the banner of the International Intellectual Property Alliance.

Unfortunately, it appears that the Canadian Government is not going be making a submission, despite the outreach of the USTR this year in inviting submissions and even conducting oral hearings. This could lead to false and misleading suggestions that Canada doesn't care or that it accepts past accusations. Sometimes, it's OK and even prudent to ignore absurd charges and processes. But the U.S. has taken the strategic high ground and the tactical initiative by at least purporting to open up this process. Whatever the intention, it's a clever move on the part of the USA. Therefore, it's risky to boycott it or ignore it at the public level. Private diplomatic submissions behind the scenes do nothing to reassure Canadians and will likely have little, if any, influence in Washington these days. Unfortunately, Canada's public silence on this and other IP issues may create the impression, rightly or wrongly, that Canada either cannot make up its mind or is unwilling to take a public stand on important but controversial issues. Either way, Canada risks an ever diminishing role in fora such as WIPO, ACTA, Canada/EU FTA, WTO, etc.

Nonetheless, this is an important opportunity to make views known, since the usual suspects in the U.S. copyright based industries will be working through the usual Washington lawyer/lobbyists that have much influence in the USTR to draft a report that could once again falsely condemn Canada as a rogue nation and a piracy haven, when the truth of the matter is that:

Canada already has much stronger copyright laws in many ways than the USA;

These stronger laws result in significant dollar outflows that greatly favour U.S. interests with little or insufficient benefit for Canadians;

There is no verified and reliable evidence of piracy or counterfeiting problems in Canada that are any worse than in other comparable countries. In fact, the largest and most accessible market in North American for pirated and counterfeit consumer products remains the streets of mid-town and lower Manhattan;

The alleged deficiencies in Canada's laws regarding file sharing have not been proven in any Canadian court and the music and film industries have taken no serious initiative to do so, despite having been given a green light to proceed by the Federal Court of Appeal in 2005. Instead, they lobby for US DMCA+ type laws. Indeed, much of the alleged copyright problem that the music industry complains about in Canada is a direct result of its own successful wish for a rich private copying levy, the result of which has included the effective legalization of music downloading in this country, according to comments by both the Copyright Board and the Federal Court. The music industry has proven only that it ought to be careful what it wishes for, not that there is any need to change Canadian law; and,

The entertainment industry in Canada is doing quite well, even as things stand. As Michael Geist recently reported, “Nielsen Soundscan has just released the Canadian music sales figures for 2009. Notwithstanding the regular claims that the Canadian digital music market cannot develop without copyright reform, the Canadian market grew faster than the U.S. market for the fourth consecutive year.”

Canadian copyright law is actually much stronger than U.S. copyright law in many ways, some of which are worth quite a lot of money to the USA. It is worth noting as well that, for most of the last century, most copyright royalties in Canada have been flowing to American corporate interests. While stronger copyright laws may not always make for better public policy, they often result in significant royalty outflows to U.S. and other foreign interests. Here are some 21 examples of how Canada’s copyright law is already stronger than the U.S. regime:

1. Canada has about 36 copyright collectives, many of which have received substantial direct and indirect government subsidies. The U.S. has only about half a dozen, with no government support.

2. Canada has a full-time Copyright Board which has normally had four full time members plus a sitting or retired Judge as Chairman and currently about a dozen full time professional and administrative staff. The Board has enormous policy and, effectively, law making powers. No other country of which I am aware comes close to having such a large, permanent, powerful and full time copyright tribunal.

3. Broadcasters pay more for copyright royalties than their counterparts in the USA, much of it for rights that don’t even exist in the USA - for example the “ephemeral right.”The U.S. provides an outright exemption in 17 USC §112 for the “ephemeral right.” Now, about $50-million a year more over and above is being demanded by a collective dominated by the American dominated record labels for this right in addition to amounts now collected by composers, authors and publishers. Canada's Copyright Board heard a major case on commercial radio, where this and other issues will be decided, in December of 2008 and January of 2009. However, it will probably be at least 18 months to two years after the hearing before a decision is announced, based upon the timing of some recent major decisions from the Board.

4. The Canadian Copyright Board values each right under the Copyright Act brought before it separately, with little regard to the layering and multiplicity of tariffs that result, in effect, for the same transaction. Whether this is an error in approach by the Board, and/or in policy, and/or in legislative drafting or at all is subject to fair debate. But the fact is that U.S. law goes to great length to avoid such a result, as recent court decisions have confirmed.

5. Educators pay far more for copyright clearance than their American counterparts. There is simply no mechanism in place in the USA analogous to the excessive $5.16 per K-12 student or the excessive per student and course pack rates payable to Access Copyright for post secondary students. There's a similar mechanism for Quebec. Canada's Copyright Board has pushed back on what it considers to be fair dealing in the class room from what the Supreme Court of Canada arguably requires and American law clearly permits. (The Copyright Board's controversial decision is currently under Judicial Review, in which I should disclose that I am involved).

6. Access Copyright is trying to collect $24 a year for each full time employee in Canadian provincial and territorial governments, not counting Quebec. This is potentially a cost of $6.5 million a year for Canadian taxpayers, which seems absurd in view of the Supreme Court of Canada's CCH v. LSUC decision, since most, if not all, copying of protected material would likely be for research purposes. Nonetheless, a very expensive proceeding will slowly unfold before the Copyright Board and probably beyond into the Courts. Even with an unusual push by the Copyright Board to get this moving, it will likely drag on for years. Such a tariff or equivalent mechanism would never get off the ground in the USA for many reasons, including that state sovereign immunity is well established by the U.S. Supreme Court. There may very well be provincial crown immunity in Canada, but to what extent it will be invoked is currently unclear. At any rate, this new attempted tariff by Access Copyright has no counterpart in the USA and is yet another are in which U.S. copyright owners could prove to be better off in Canada than in their own country.

7. Canadian law requires payment for certain educational uses that are explicitly exempted in the USA, such as the performance of films in a classroom.

8. Canada has no explicit statutory exception for the performance of music for the purpose of selling sound recordings or audiovisual equipment, as is found in §110(7) of the U.S. Copyright Act.

9. Canadians pay large amounts to SOCAN and NRCC for performances in countless bars, restaurants, retail stores, and other small area business establishments. The U.S. notoriously exempts these establishments, contrary to a WTO “Section 110" ruling which the U.S. continues to flout. The U.S. is by far the leading adjudicated current violator of international copyright law.

10. Canada has very inadequate rights in place for distance educators. This results in higher costs and less access to such innovative education, which is the way of the future. The USA has a regime which, though far from ideal, represents a very serious attempt to deal with this new and important phenomenon.

11. Canada has “neighbouring rights.” The U.S. doesn’t. This translates into very big payments for record producers and performers. The Copyright Board has decided that these rights are worth as much in principle as performance rights for composers and authors, which currently generate well over $200 million per year. The limitation on eligibility for foreign neighbouring rights claims - which is probably already subject to much leakage - would simply disappear if Canada ratifies the WPPT.

12. Canadian movie theatres have to pay SOCAN for exhibiting films. NRCC is trying to get the same result. While these rights are normally bought out and cleared for Hollywood productions in the USA, and there is no further requirement to pay ASCAP, BMI or SESAC, Canadian law has thus permitted SOCAN to collect from theatres in Canada for showing the same films. SOCAN collected $881,000 for theatrical exhibition of films in 2005. Though not a huge amount of money per annum, this has been going on for decades. Guess where most of the money goes.

13. Canada has a rich blank media levy scheme that has generated nearly $300 million overall to date, most of which will wind up in the USA. Artists see at most about an average of $160 per year of this - and probably much less in reality on an average basis. The U.S. has never had anything comparable. (I've been involved in this issue for a long time).

14. Canada has moral rights for all types of works, as required by the Berne Convention. The U.S. doesn’t, with the limited exception of visual arts works. Any possible pretence that the USA provides moral rights generally through other means was put to rest by the U.S. Supreme Court in the 2003 Dastar decision.

15. Canada seriously respects the right of independent creators to own their copyright. The U.S. walks all over this with its broad “work for hire” doctrine that favours large corporations.

16. Canada long ago got rid of most of its compulsory licences, including the mechanical license for sound recordings. The U.S. still has this and many more, while it continues to preach to other countries against compulsory licenses.

17. Canada has no parody right/exception for creators and users. In fact, the Canadian Federal Court has explicitly ruled against such a right. On the other hand, the U.S. Supreme Court has confirmed such a right.

18. Canada has no time shifting exception that would clearly allow for legal use of DVRs/PVRs such as the TIVO in Canada. The U.S. has had this since the 1984 Betamax decision from the U.S. Supreme Court. Recent U.S. jurisprudence in the Cablevision case has extended this user right and this technology into “the cloud”.

19. Canada has crown copyright, which leads to all kinds of unnecessary costs and complications for those ranging from advanced researchers to fishermen, who should be able to depend on mapping and GPS information for life saving purposes from the government and not privatized for profit parties. Canada privatizes its government copyright for profit, which cannot happen in the USA. This has not necessarily led to more efficiency. In some cases it has been quite the opposite.

20. Canada has a lower threshold of originality than the USA and provides protection in some instances where the U.S. clearly would not. Canada has no counterpart to the U.S. Bridgeman v. Corel decision denying copyright in photographs of public domain paintings. Nor would a U.S. Court ever confer copyright in the simple idea of including a column of private sale prices for used cars in a three column layout in a booklet of used car prices with no copying of actual data, as the Canadian Federal Court of Appeal did in a 2000 decision that was based upon very inadequate arguments and is inconsistent with other Canadian jurisprudence both before and after, but which has not yet been explicitly overruled.

21. Canada's historic lack of compulsory registration and formal renewal requirements together with our very longstanding life plus fifty term has frequently resulted in a much longer duration of copyright protection for American works than is the case in the USA. A prime example is the music of Irving Berlin. This may be an unusual example because of Berlin's great age and importance, but he outlived his own copyright in his early pre-1923 compositions in the USA. However, copyright in Berlin's music will endure in Canada until 2039 for all of his works. There will also be a longer term in Canada than the USA for many older films that have long since entered the public domain in the USA where the term is normally calculated from the date of publication. In Canada, however, the term of protection is measured in terms of the life of the actual creator(s) plus 50 years.

I would hope that both the Canadian and American Governments are aware or become aware of the above points.

The danger from the “301" process is not so much any kind of retaliation or other direct action, which the WTO has outlawed, not that the USA would necessarily pay attention to that ruling. The real danger is that well meaning but non-expert officials and politicians on both sides of the border and even in other countries may be influenced by inaccurate and/or misleading findings by the USTR resulting yet again from the incessant spin, propaganda and lobbying at any cost by certain U.S. dominated industries. One has to ask what financial return is expected by these industries to justify the clearly enormous spending on Canadian and American lawyer/lobbyist and other high profile activity.

Tuesday, February 16, 2010

Toyota is sticking (pardon the pun) to its supposed rights to control the TPMs in its cars' black boxes.

These boxes may contain useful information for plaintiffs in various lawsuits, not to mention regulators. But only Toyota can decode this information and "says it only makes the data available when requested to do so by law enforcement, federal regulators or by court order", according to the Wall Street Journal's Law Blog.

The obvious questions that now arise, such as whether we can trust Toyota to provide full disclosure of the decoded information, once again require that we ask whether any protection forTPMs is warranted in the absence of all necessary protection from them.

Indeed, maybe we need go even further to ask whether there are some situations - such as the use of TPMs in automobile black boxes - where such protection should actually be prohibited.

Friday, February 12, 2010

Nelson has had a long and very distinguished career as an IP litigator and contributor to the profession. He retired from full time practice in 2002. Only seven years after he was called to the bar in 1969, he and Malcom McLeod won a major victory in the Supreme Court of Canada in the MacDonald v. Vapor case, in which s. 7(e) of the Trade-marks Act was declared to be unconstitutional in a decision written by Laskin, C.J.C. That section dealt with "any other business practice contrary to honest industrial or commercial usage in Canada." The section was a sort of catch-all provision for unfair competition/tort/civil delictual liability. Laskin, CJC's judgment is a classic and a landmark not only in IP law but constitutional law generally.

This has been the only successful constitutional challenge to a Canadian IP statutory provision to date, which is a huge milestone and hard to match. Believe me - I know, having tried to use this very decision to challenge the private copying levy scheme. The result was close, but no cigar.

Nelson has been very active in ALAI, a major international copyright organization.

This is an excellent appointment and I congratulate Nelson and the Copyright Board.

Thursday, February 04, 2010

There will likely be another round of confusing use of terminology involving "secondary liability" and "authorization" following the landmark iiNet decision of February 4, 2010 decision in Oz.

In 2005, I was asked to co-author an amicus brief on behalf of Sharman in the US Supreme Court Grokster case. In that brief, we stated:

While the legal systems of many countries are capable of dealing with the issue of secondary liability in copyright law, there is no consistent pattern in terms of doctrine or even result as to how this is done. The word “authorize” is not used in international law in any sense relevant to the IRO’s brief or to the issues at hand, particularly regarding secondary infringement. Moreover, as will be seen below, the word “authorize” is used in one sense in the United States, in another very different sense in the international treaties and the EU, and in yet a third very different sense in the Commonwealth countries (wherein the term has yielded conflicting results at the highest judicial level).

The brief looked at the state of the law in early 2005 on "secondary liability" and "authorization" in the USA, UK, Canada and Australia. It is useful in clarifying the difference in the concepts and terminology.

I'm looking forward to reading in detail exactly what Judge Cowdroy has to contribute to our understanding of "authorization." There have been some significant divergences in the past between the Canadian and Australian approach on this issue. Let's see where things stand now.

BTW, another aspect of terminology that can sometimes be confusing in this context of comparative terminology is that of "secondary infringement." In Canada, this means the liability set forth in s. 27(2) of the Act that deals with such matters as sale, distribution, and importation. This is the section that figured prominently in the Supreme Court's Kraft decision on parallel imports (in which I was involved) and the SCC's CCH decision, in which the Court famously held in the context of the unsuccessful claim against the Great Library for selling copies of the publishers' works that "Absent primary infringement, there can be no secondary infringement."

In summary, in this proceeding, the key question is: Did iiNet authorise copyright infringement? The Court answers such question in the negative for three reasons: first because the copyright infringements occurred directly as a result of the use of the BitTorrent system, not the use of the internet, and the respondent did not create and does not control the BitTorrent system; second because the respondent did not have a relevant power to prevent those infringements occurring; and third because the respondent did not sanction, approve or countenance copyright infringement.

I will now make my formal orders. For the reasons provided in the written judgment I make the following orders.

The Amended Application be dismissed.

Subject to Order 3 and 4, the Applicants pay the costs of the Respondent, including costs thrown away as a result of the Applicants’ abandoning the primary infringement claim against the Respondent.

Any party or person applying for an order for costs different to that provided by Order 2 is to notify the Court within 14 days in which event Order 2 will be vacated and in lieu costs will be reserved.

If any application for costs is made as provided in Order 3 the parties and/or persons are to consult and prepare consent directions for the filing of submissions and, if required, for a hearing on costs.

Here's the decision - which is 636 paragraphs in length and extremely detailed in its factual and legal analysis.

It is worth noting that Justice Cowdroy issued this decision just 70 days - i.e. 10 weeks - after the conclusion of a hearing that began on October 26, 2009 and ended on November 26, 2009 with 19 hearing days . And much of the time the decision was pending was the Christmas season.

Michael Geist has quickly focused on the Judge's disparaging remarks on "termination" of subscribers accounts, and how this would not be reasonable because it would prevent use of the internet for all sorts of non-infringing uses.

Of course, the decision is mostly about "authorization", which is a proverbially important topic in Commonwealth countries and very different in important ways from the American concept of contributory infringement or secondary liability. It is this latter concept plus the US Supreme Court's "inducement" doctrine enunciated in Grokster + the US instigated three strikes policy that the US is trying to force upon Canada and ohter countries in every forum it can.

"Authorization" was also a key issue in the Canadian Supreme Court's landmark 2004 CCH decision.

While this decision will make for wonderful reading for copyright aficionados everywhere, and much celebration by those who believe in reasonable, proportionate and effective remedies, there will also be another process starting immediately.

This will entail the inevitable spin and propaganda that entertainment industry lobbyists will invoke as to how this decision clearly proves the need for a strong and mandatory "three strikes" mechanism and that ACTA is just the right forum to put it into place.